Tuesday, May 03, 2016

Washington Post not telling full story on Cuozzo/IPR?

From a Washington Post piece on the Cuozzo case, and the ambiguities left by Congress as to IPR in the AIA:

The problem: Congress never told the agency [USPTO] how it was supposed to review contested patents, so the Patent Office decided to use the same broad standards that it has always used to review applications, not the textual standards of the federal courts. This stacked the patent review process against patent-holders, the opposite of what would happen in a court trial. Over the past few years, inter partes review has canceled hundreds of patents, shooting down more than 80 percent of the existing patents subject to review in cases that weren’t settled.

Critics of inter partes review — mostly pharmaceutical and software start-up companies that rely heavily on their intellectual property to do business — have taken to calling the board governing the review the “Patent Death Squad.” They argue that the new system has upended intellectual property rights and stymied innovation in the United States.

Their opponents — generally bigger tech companies like Google and Apple (the common targets of patent litigation) — defend the Patent Office. For them, the new review process is doing what it was designed to do: weeding out bogus patent claims and offering a more efficient alternative years-long court battles.

The Supreme Court is now pitted between these two sets of industries and must decide what standards inter partes review should use. Should it act as an extension of the Patent Office’s application process, striking down most of the patents with a tough standard? Or should it act as a fast-track replacement for the court system, with a lower standard?

The Washington Post piece by Robert Gebelhoff did NOT get into the failure of applicants to obtain amendments in IPR. As pointed out by Judge Newman, amending claims is a key part of patent prosecution, and the absence of amendments makes IPR very UNLIKE conventional application review.

http://ipbiz.blogspot.com/2016/01/us-supreme-court-to-hear-cuozzo.html [ An issue raised by Judge Newman was that the use of the BRI standard was incommensurate with the unwillingness of PTAB to allow amendments. ]

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About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.